• Guardant Health, Inc. v. University Of WashingtonNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2022-00817 · APJ Zhenyu Yang · IPR · Remand

  On remand, the Board found Travers ’075 did not enable RCR amplification followed by SMRT sequencing and held claims 1–30 not shown unpatentable under the asserted obviousness grounds.

  RulingsRemand decision

  • RemandOther

    “B. Scope on Remand On remand, we are bound by the terms of the Federal Circuit’s mandate. Intell. Pixels Ltd. v. Sony Interactive Ent. LLC, 181 F.4th 1216, 1220 (Fed. Cir. 2026) (“An administrative agency is bound by the mandate of a reviewing court much as a lower court is bound by the mandate of a higher court.”). According to the Federal Circuit, on appeal, Patent Owner “UW argues that ‘Travers ’075 does not enable the sequencing of an RCR concatemer using PacBio’s SMRT sequencing,’ and therefore because paragraph 122 is not enabled, it cannot be relied on for disclosing amplification followed by sequencing.” Paper 50, 14. Because “[t]he Board did not reach this issue,” the Federal Circuit “remand[ed] the case for consideration of this issue by the Board in the first instance.” Id. Thus, consistent with the court’s mandate, we must decide “whether Travers ’075 enabled RCR amplification followed by SMRT sequencing.” Id. at 8.” slip op. at 4

  • BurdenNot shown unpatentable

    “A prior art reference is presumed to be enabled. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (holding that “a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled”); In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (extending the presumption to prior art printed publications). A patent owner, however, may present persuasive evidence that the relevant disclosures of a prior art are not enabled and therefore are not pertinent prior art. Amgen, 314 F.3d at 1355; In re Antor Media, 689 F.3d at 1289 (discussing the applicant’s burden to submit rebuttal evidence of nonenablement during prosecution); Apple Inc. v. Corephotonics, Ltd., 861 Fed. App’x. 443, 450 (Fed. Cir. 2021) (“[R]egardless of the forum, prior art patents and publications enjoy a presumption of enablement, and the patentee/applicant has the burden to prove nonenablement for such prior art.”). “[T]here is no absolute requirement for a relied-upon reference to be self-enabling in the § 103 context, so long as the overall evidence of what was known at the time of invention establishes that a skilled artisan could have made and used the claimed invention.” Raytheon Techs. Corp. v. Gen. Elec. Co., 993 F.3d 1374, 1376–77 (Fed. Cir. 2021). But, “if an obviousness case is based on a non-self-enabled reference, and no other prior art reference or evidence would have enabled a skilled artisan to make the claimed invention, then the invention cannot be said to have been obvious.” Id. at 1377.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The Federal Circuit stated that “the elements of the challenged claim are expressly taught by Travers ’075. Travers ’075 discloses performing RCR amplification followed by SMRT sequencing in a single embodiment.” Paper 50, 14. As a result, “no finding regarding a motivation to combine to arrive at those claimed elements is required.” Id. at 9. In addition, it was error to require Petitioner to show that a skilled artisan “would have had a reasonable expectation of success in performing RCR replication of SMRTbell templates followed by SMRT sequencing.” Id. at 13. “Unless remanded by [an appellate] court, all issues within the scope of the appealed judgment are deemed incorporated within the mandate and thus are precluded from further adjudication.” Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999). Therefore, the only issue for us to decide is “whether Travers ’075 enabled RCR amplification followed by SMRT sequencing.” Paper 50, 8.” slip op. at 14

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “polymerase-template complexes in the same ZMW.” Id. (citing Ex. 1035, 39). Citing the Larrea Declaration, Petitioner contends that loading of multiple templates “is easily mitigated.” Id. at 18 (citing Ex. 1033 ¶ 19; Ex. 1035, 39). We are not persuaded by this argument either. Dr. Larrea testifies that one of the two methods to “easily mitigate[]” loading multiple templates into a single ZMW is “bioinformatically trimming the read to only the high-quality region (HQR).” Ex. 1033 ¶ 19. Dr. Larrea, however, provides no support for this testimony. In fact, he does not even explain what a “high-quality region (HQR)” is. We, thus, accord little weight to this testimony. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (August 24, 2022) (precedential) (holding “conclusory and unsupported” declaration testimony is entitled to little weight).” slip op. at 26

  Patent outcomesUS 10,760,127 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 10,760,127
• CSPC Pharmaceutical Group Limited / CSPC Ouyi Pharmaceutical Co., Ltd. et al. v. Ipsen Biopharm Ltd.Some claims unpatentable
  PTAB · Aug 13, 2026 · IPR2025-00505 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1, 3–6, and 8–14 are unpatentable as obvious over the first § 103 combination; claims 2, 7, and 15 were not shown unpatentable because the art did not support the claimed drug sequence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that [t]he person of ordinary skill in the art (POSA) would have been an M.D. and/or Pharm. D who would have completed training in medical oncology, particularly in the field of gastrointestinal (GI) cancers, or a Ph.D. in clinical pharmacology, pharmaceutical sciences, pharmaceutics, and/or drug delivery, also particularly in the field of GI cancers, or their equivalents, along with at least 1-2 years of post-doctoral experience. Pet. 26 (citing Ex. 1002 ¶¶ 44–46). Patent Owner states that, for purposes of this proceeding, it does not dispute Petitioner’s proposed definition of a POSA. PO Resp. 8. Based on the entirety of the trial record, we adopt Petitioner’s proposed definition of a POSA’s skill level because it is consistent with the skill level reflected in the disclosures of the ’552 patent and prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We decline to discount Dr. Oberstein’s opinion based on the alleged conflict of interest and bias. Dr. Oberstein testified that the consulting fees he receives from Patent Owner reflect a small fraction of his income. Ex. 1210, 402:21–403:9. We also agree with Patent Owner that an oncologist prescribing an FDA-approved regimen does not evince bias. See Sur-reply 23; see also Ex. 1206, 49 (showing NALIRIFOX is a category 1, NCCN-preferred first-line therapy for metastatic pancreatic cancer), 69 (explaining category 1 is based upon high-level evidence). Petitioner also contends that Dr. Oberstein “offers conclusory opinions,” “fails to properly apply the law, continues to look at each reference in isolation, refuses to acknowledge logical suggestions in the art, and imports new limitations into the claims.” Reply 3–4. We evaluate each piece of evidence, including Dr. Oberstein’s opinion, as it relates to our substantive patentability analysis, and accord it proper weight.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “In the DI, the Board stated that the ordinary understanding of a claim reciting a “method of treating metastatic adenocarcinoma of the pancreas” that comprises “administering an antineoplastic therapy to the patient” in order “to treat the metastatic adenocarcinoma of the pancreas” is that the “treatment” would have more than a de minimis therapeutic benefit or efficacy for the patient being treated. DI 14. We, however, rejected the notion that the claims “would require some particular degree of clinical efficacy” because “the level of clinical efficacy is not a claim limitation.” Id.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “The parties, however, disagree over whether each recited dose must be the starting dose. Petitioner argues that “claim 1 requires that the method of treatment is a first-line therapy, but does not require that the claimed doses be used as a starting dose.” Paper 51, 1. In contrast, Patent Owner argues that “[t]he specification describes that the recited dose of each drug is a ‘starting’ or ‘initial’ dose.” Paper 50, 2 (citing Ex. 1001, 13:38–45, 30:5–7). For purposes of this Decision, we do not need to resolve this dispute. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (stating that claim terms need only be construed to the extent necessary to resolve the controversy). As explained below, we agree with Petitioner that, even if claim 1 recites the starting dose for each drug, Petitioner has shown, by a preponderance of the evidence, that the prior art teaches each dose and a POSA would have had a reason to start with the recited doses. See infra Section II.G.3; Paper 51, 3 n.2. Because we find that the prior art teaches or suggests the claimed subject matter even under Patent Owner’s proposed narrower claim interpretation, we need not further construe the disputed claim language.” slip op. at 16

  Patent outcomesUS 11,344,552 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,344,552
• Google LLC v. Brodti Inc.All claims unpatentable
  PTAB · Jun 30, 2026 · IPR2025-00472 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious under § 103 over Nicholas, Laidlaw, Mayadas, and Error, with Yasnovsky added for claims 7, 8, 16, 17, and 20.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner’s and Patent Owner’s definitions for the level of ordinary skill in the art are substantially similar. In light of the record before us, we adopt Patent Owner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’898 patent and the prior art of record, we determine that the definition offered by Patent Owner comports with the qualifications a person would have needed to understand and implement the teachings of the ’898 patent and the prior art, particularly experience pertaining to Internet/web interfaces and web-based media. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Neither party argues, nor do we determine, that the outcome of our Decision depends on which party’s definition is selected.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “includ[e] a server and one or more webpages that may be provided by the server for display in a web browser.” Pet. Reply 5 (citing Ex. 1026 ¶¶ 13–15). Petitioner argues, and we agree, that the Specification strongly supports this construction (requiring a server and webpage(s)) by describing a “website” as synonymous with a server computer system: “The WWW [(World Wide Web)] service allows a server computer system (i.e., Web server or Web site) to send graphical Web pages or screens of information such as the advertising materials to a remote client computer system 10.” Ex. 1001, 3:66–4:2 (emphases added); see id. at Fig. 1 (depicting a service engine and webpages as a web server, i.e., website), 3:15–18 (describing Figure 1 as showing “a server of the website” (emphasis added)); Pet. Reply 5; see Ex. 1026 ¶ 13. Petitioner also submits a supporting (and persuasive) contemporaneous technical dictionary definition of “website,” which highlights the distinction between a lay person’s understanding of the term versus that of the relevant artisan. Pet. Reply 5–6. This definition explains that the “common but technically inaccurate” usage of “website” is to mean “Web page,” but the technically correct usage of “website” is to mean “one or more computers that are associated with a fully qualified domain name and make content available on the Web.” Id. (citing Ex. 1028, 402). Petitioner’s expert, Dr. Crovella, likewise testifies that “[a] website cannot exist without the server or computer that provides its webpages.” Ex. 1026 ¶ 15; see Ex. 1027, 36:8–20 (Patent Owner’s expert, Dr. Myler, agreeing that “it has to be some machine somewhere that’s providing the webpages for the website.”). The limitations of claim 1 also support Petitioner’s position that “website” includes a server and webpage(s). Reply 5. For example, claim 1 recites advertising material for “populat[ing] on one or more websites,” and selected “advertising buy options comprise at least one website of the respective websites.” Ex. 1001, 10:29–51 (emphases added). We find these limitations make the most technical sense where “website” implicates an Internet domain or domain name, such as brodti.com, which itself is a computer system (server) and associated webpage(s) reached via that domain name. This interpretation aligns with testimony of Patent Owner’s expert, Dr. Myler, in which he states that a “website” describes “a group of webpages at a particular domain (e.g., www.espn.com, www.espn.com/nba, www.espn.com/nfl, www.espn.com/nhl).” Ex. 2009 ¶ 68 (emphasis in italics added). In other words, brodti.com and espn.com are two different websites, with each website having one or more webpages (e.g., www.espn.com/nba, www.espn.com/nfl), and such websites include a server giving life to such webpage(s). slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Patent Owner proffers that placing advertising material “within” web property content means “inserting” an advertisement into particular content. PO Resp. 12. Petitioner responds that “placing . . . within” means what it says, and notes that “[t]he words ‘insert’ or ‘inserting’ appear nowhere in the [Specification].” Pet. Reply 7–8; see id. at 8 (Petitioner arguing that Patent Owner’s expert “admitted that the claim does not specify details regarding how advertising material needs to be placed within web property content.” (citing Ex. 1027, 29:18–24)). Patent Owner replies that the relevant artisan allegedly “would have understood ‘placing . . . within’ to mean ‘inserting into,’” but then submits that whether “placing . . . within” versus “inserting into” is used does not matter because Petitioner allegedly has not demonstrated the obviousness of either. PO Sur-reply 17. As Petitioner observes, “[i]t is unclear if Patent Owner intended any difference in meaning between these two terms.” Pet. Reply 8. Accordingly, based on the complete record before us, we determine that no further construction of this limitation is needed, and “placing A within B” means what it says—“placing A within B.”” slip op. at 20

  • Expert testimonyPetitioner expert creditedOther

    “determining” of impression validity feature of limitation 1[h] by disclosing “a ‘single-pixel’ image technique for determining that an impression is valid,” e.g., by using “cookies.” Pet. 42–45. Petitioner’s expert, Dr. Crovella, testifies that this “single-pixel” impression tracking technique would have been a “well-known” technique to the relevant artisan, and as described by Error, operates as follows: [A] URL link for a single pixel (or transparent) image file is embedded onto a webpage that is delivered to a web browser. The image is not meant to be viewed and will likely not be visible to the user. After the user’s browser receives the webpage, it uses the embedded URL link to request the single-pixel image from a server. The receipt of that request by the server provides an indication that the user’s web browser actually received and presented the web page to the user. Ex. 1002 ¶ 133 (citing Ex. 1007, 1:36–54, 2:6–21); see id. at ¶¶ 132–139. slip op. at 43

  Patent outcomesUS 11,416,898 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,416,898
• Motorola Mobility LLC / Google LLC v. Multifold International Incorporated Pte. Ltd.All claims unpatentable
  PTAB · May 15, 2026 · IPR2025-00038 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–7, 10–13, 16, 17, 19, and 20 are unpatentable as obvious over Chin; the Board did not find them anticipated by Chin or Whitehorn.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that [a] person of ordinary skill in the art . . . (‘POSITA’) would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field plus at least two years of work or post-graduate experience in image capture, image processing, image display, user interfaces, or a related field. Additional education could offset a lesser amount of experience and vice versa. Pet. 16. Patent Owner accepts Petitioner’s definition. See PO Resp. 25. We adopt Petitioner’s undisputed definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’842 Patent Specification and the asserted prior art.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We agree with Petitioner that claim construction is unnecessary. As demonstrated in the analysis provided below addressing this claim limitation in view of the prior art, we need not explicitly construe “wherein in each image capture mode a display on the first or second screen is different.” See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Similarly, we need not construe any other claim terms or phrases to resolve the controversy between the parties.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that Petitioner’s arguments relying on Kennametal are belated. A “[p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019)6 at II.I. Thus, we need not consider Petitioner’s belated argument raised for the first time in the Reply. In any event, we agree that Kenneametal is inapplicable for the purpose of supplying a claim limitation missing from Chin’s disclosure. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274 (Fed. Cir. 2017) (“Kennametal does not stand for the proposition that a reference missing a limitation can anticipate a claim if a skilled artisan viewing the reference would ‘at once envisage’ the missing limitation.”). Chin’s disclosure is silent regarding what is or is not displayed on first display 51 when images are displayed on second display 52 in self-photographing mode, and similarly silent regarding what is or is not 6 Available at www.uspto.gov/patents/ptab/trial-practice-guide. displayed on second display 52 when images are displayed on first display 51 in outward-facing mode. See generally Ex. 1004.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that the theory of inherency was not raised in the Petition and is therefore waived. Compare Pet. 29–33, with Pet. Reply 11–15. In any event, we also agree that Petitioner’s speculation regarding the disclosure of Chin is insufficient to support a theory of inherency. See Pet. Reply 11–15. As explained above, Chin’s disclosure is silent regarding what is or is not displayed on first display 51 when images are displayed on second display 52 in self-photographing mode, and similarly silent regarding what is or is not displayed on second display 52 when images are displayed on first display 51 in outward-facing mode. See Ex. 1004. Speculation regarding the possibilities and probabilities of what is displayed on first display 51 in self-photographing mode, and what is displayed on second display 52 in outward-facing mode are insufficient to establish inherency. See In re Robertson, 169 F.3d at 745. For the forgoing reasons and based on the entire record developed during trial, the preponderance of the evidence does not support Petitioner’s showing that Chin discloses “wherein in each image capture mode a display on the first or second screen is different.” Accordingly, based on the entire record developed during trial the preponderance of the evidence does not support Petitioner’s showing that Chin anticipates claim 1.” slip op. at 20

  Patent outcomesUS 8,836,842 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,836,842
• Qiagen Sciences, LLC v. Tecan Genomics, Inc.All claims unpatentable
  PTAB · May 13, 2026 · IPR2025-00028 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–15 and 17–22 are unpatentable as obvious over the specified combinations of Shapero, Delseny, and, for certain claims, Hamady or Jones.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “In the DI, we addressed Patent Owner’s arguments disputing Petitioner’s proposed definition. DI 17–18 (citing Prelim. Resp. 11–12). We stated that for purposes of this Decision, we find a POSA would have had a Ph.D. in molecular biology, molecular genetics, bioinformatics, biochemistry, or a related field. Alternatively, a POSA would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. Additionally, the POSA would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned. Id. at 18. After institution, Patent Owner states that, for purposes of this proceeding, it adopts the Board’s definition of a POSA. PO Resp. 12. Based on the entirety of the trial record, we maintain our finding of a POSA’s skill level.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Claim Construction In an inter partes review, we construe a claim term “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “A reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). “The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” Id.” slip op. at 29

  Patent outcomesUS 10,036,012 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,036,012
• Motorola Mobility LLC / Google LLC v. Multifold International Incorporated Pte. Ltd.All claims unpatentable
  PTAB · Apr 28, 2026 · IPR2025-00040 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–9 are unpatentable: claims 1–4 and 6–9 as anticipated or obvious over the asserted references, and claim 5 as obvious over Yook or Yook in view of Purcell.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “We disagree with Patent Owner’s argument because the Petition presents argument and evidence that substantively demonstrates, with clarity and particularity, how and why each reference discloses, teaches, suggests, or otherwise renders obvious the displaying element recited in limitation 1[B]. We agree with Petitioner that “Patent Owner neglects to address the actual substance of the Petition, which clearly addresses this limitation with respect to each reference.” Reply 1–2. The Petition addresses in detail how each asserted reference discloses displaying two applications on two separate displays in accordance with the displaying element, by presenting multiple annotated figures from Yook, Lee, Aguilar, and Purcell. Pet. 27–30, 47–50, 62–63, 77–78. The Petition also cites and quotes the accompanying descriptions for the annotated figures from each prior art reference as well as explanatory expert opinion testimony from Dr. Rodriguez. Id. (citing Rodriguez Decl. Ex. 1003 ¶¶ 70–74, 119–122, 149–150, 182–183; Yook Ex. 1004 ¶¶ 47, 51, 58, 96–101, Figs. 4b, 4d, 5; Lee Ex. 1005 ¶¶ 48–53, Figs. 4, 6, 9, 10; Aguilar Ex. 1006, 7:1–7, Figs. 5–5d; Purcell Ex. 1007 ¶ 16, Fig. 2). We provide detailed examples below of how the Petition maps Yook and Lee onto the displaying element of limitation 1[B] in compliance with the particularity requirement of 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4). Although we do not provide detailed examples directed to Aguilar and Purcell, we find the Petition maps Aguilar and Purcell onto the displaying element of limitation 1[B] in compliance with the particularity requirement of 35 U.S.C. § 312(a)(3) and 37 C.F.R. § 42.104(b)(4).” slip op. at 14

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Instead, Patent Owner chose to raise an entirely new theory of patentability. Sur-Reply 3–13; Tr. 28:8–20. Patent Owner’s new theory is based on a claim construction that construes claim 1 of the ’756 patent as “recit[ing] a specific order of steps that must be performed in the order written.” Id. at 3–4. “Because of this order, the [displaying element] must occur after both (two) ‘selecting’ steps,” and Patent Owner contends none of the prior art references asserted in the Petition “meets the order required by claim 1.” Id. at 4. We will not consider Patent Owner’s new theory of patentability raised for the first time in its Sur-Reply. See Apple Inc. v. e-Watch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach”); see also Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for the first time in the reply brief, which could have been raised in the opening brief, is waived). Patent Owner should have raised its “specific order of steps” argument in the Response. By failing to do so, Patent Owner has waived the argument. Id.” slip op. at 22

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Third, we are further persuaded by Dr. Surati’s testimony that the wave shape visual indicator depicted in Figures 10A–C of the ’756 patent indicates that a user can do something, but not necessarily what that something is (e.g., minimizing or maximizing). Id. at 17 (citing Ex. 1012, 200:1–6). It is telling that Dr. Surati testified that only through repeated use and exposure would a user recognize a relationship between a wave shape and the functions of maximizing or minimizing an application. Id. (citing Ex. 1012, 197:13–199:22). We are also persuaded by Dr. Rodriguez’s testimony regarding the teachings of Yook: Yook therefore teaches giving users the ability to transition a split-screen application back into full screen mode. Further, a POSITA would have understood that this ability would undoubtedly be implemented in the form of a visual indicator, which, from the 2000s to today, is the industry’s universal method of alerting a user to an accessible function. . . . Ex. 1003 ¶ 107 (emphasis added); For claim 5, Yook discloses many different types of “icons” that are used to receive user gesture inputs. See, e.g., Figs. 1, 4e, 5a, 5c, 5d, 6, 7a, 7b, 7c, 8, 9, 10, 11, 12, 13. Examples of these icons are displayed below: Id. ¶ 108; and A POSITA would have understood that Yook’s icons can have a wave shape because the shape taken by a visual indicator, or icon, is merely a matter of common and routine design choice. Indeed, the shape of an icon does not affect its function or how a gesture input is received. Id. ¶ 109 (emphasis added). In short, we are persuaded Petitioner has established by a preponderance of the evidence that a displayed visual indicator that “has a wave shape” is a design choice not affecting the function of the visual indicator, and a visual indicator that “has a wave shape” would have been an obvious design choice to a POSITA in view of Yook.” slip op. at 30

  • Skill levelSkill level board ownDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. We adopt the parties’ agreed level of ordinary skill in the art, which is consistent with the description in the ’756 patent and the prior art of record.” slip op. at 9

  Patent outcomesUS 9,134,756 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,134,756
• Inari Agriculture, Inc. v. Corteva Agriscience LLCNo claims unpatentable
  PTAB · Nov 18, 2025 · IPR2024-01014 · APJ Zhenyu Yang · IPR · Final written decision

  Petitioner did not show claims 1–8 unpatentable because they are entitled to the 2004 priority date, making Barbour unavailable as prior art.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Entitled to earlier dateDecided for patent owner

    “For a claim to a biological material, the enablement requirement of § 112, first paragraph, does not require such assured access to a microorganism deposit as of the filing date; what is required is assurance of access (to the microorganism culture by the public upon issuance of a patent on the application) prior to or during the pendency of the application, so that, upon issuance of a U. S. patent on the application, the public will, in fact, receive something in return for the patent grant. Feldman, 517 F.2d at 1355. Patent Owner has persuaded us that such exception not only applies to a deposit, but also extends to a biological material known and readily available. See 52 Fed. Reg. 34080, 34081. In this case, it is undisputed that TC1507 germplasm was known and readily available to the public by Barbour’s publication date in 2006 (Pet. 49–53), years before the 2014 issuance date of the ’378 patent (Ex. 1001, code 45). Thus, based on the record developed through trial, we agree with Patent Owner that the 2004 application satisfies the enablement requirement as of its application date in 2004. PO Resp. 16–18 (citing 52 Fed. Reg. 34080, 34081). As a result, the challenged claims are entitled to the 2004 priority date and, thus, Barbour does not qualify as prior art.” slip op. at 15

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “In this case, it is undisputed that TC1507 germplasm was known and readily available to the public by Barbour’s publication date in 2006 (Pet. 49–53), years before the 2014 issuance date of the ’378 patent (Ex. 1001, code 45). Thus, based on the record developed through trial, we agree with Patent Owner that the 2004 application satisfies the enablement requirement as of its application date in 2004. PO Resp. 16–18 (citing 52 Fed. Reg. 34080, 34081). As a result, the challenged claims are entitled to the 2004 priority date and, thus, Barbour does not qualify as prior art. Because all of Petitioner’s challenges rely on Barbour (Pet. 6), all those challenges fail.” slip op. at 15

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “In this case, it is undisputed that TC1507 germplasm was known and readily available to the public by Barbour’s publication date in 2006 (Pet. 49–53), years before the 2014 issuance date of the ’378 patent (Ex. 1001, code 45). Thus, based on the record developed through trial, we agree with Patent Owner that the 2004 application satisfies the enablement requirement as of its application date in 2004. PO Resp. 16–18 (citing 52 Fed. Reg. 34080, 34081). As a result, the challenged claims are entitled to the 2004 priority date and, thus, Barbour does not qualify as prior art. Because all of Petitioner’s challenges rely on Barbour (Pet. 6), all those challenges fail.” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “would understand that the term “‘flanked by’ permits overlap between the expression cassette and the DNA sequence it is flanked by.” Pet. 24–26. Patent Owner does not propose any claim construction. PO Resp. 6–7. On this record and for purposes of this Decision, we see no need to expressly construe any claim term.” slip op. at 9

  Patent outcomesUS 8,901,378 not shown unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 8,901,378
• Intel Corporation / Advanced Micro Devices, Inc. v. Advanced Cluster Systems, Inc.Instituted
  PTAB · Nov 7, 2025 · IPR2025-00913 · APJ Brian P Murphy · IPR · Institution

  The Board instituted review of claims 1–30 on all asserted grounds, finding a reasonable likelihood that claims 1–25, 27–28, and 30 are obvious over Menon, Trefethen, RS6000, and POEref.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc (quoting Magnum Oil)). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). We assess Petitioner’s evidence and argument according to the above- referenced obviousness standard. We determine that the Petition satisfies the reasonable likelihood of prevailing standard under 35 U.S.C. § 314(a). We begin our analysis with a discussion of the Menon, Trefethen, RS6000, and POEref references. slip op. at 15

  • Skill levelSkill level petitioner adoptedOther

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the Petition’s formulation of the level of ordinary skill in the art, which is consistent with the description in the ’034 patent, the prior art of record, and the testimony of both experts.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner relies on the ordinary and customary meaning of the claim terms consistent with the Phillips standard. Pet. 12–13 (citing 37 C.F.R. § 42.100(b)). The Petition addresses the construction of “peer-to-peer architecture” recited in independent claims 1 and 30 of the ’034 patent, a limitation we need not construe to decide the institution question. Id. at 13; Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner contends that “no claim construction is required” to address the Petition’s asserted deficiencies. Prelim. Resp. 6. Patent Owner also contends, however, that the Petition relies on a “novel claim construction” of limitations [1.4.1] and [1.5.1]—“second [third] hardware processor with a plurality of processing cores”—to support Petitioner’s obviousness argument. Id. at 11–12.8 Patent Owner challenges the Petition’s reliance on “single core processors on different chips,” such as the Power3 single-core processors of the Symmetric Multi- Processor (“SMP”) configuration disclosed in the RS6000 reference, as a disclosure of limitations [1.4.1] and [1.5.1]. Id. Patent Owner contends that such single-core processors on different chips do not satisfy limitations [1.4.1] and [1.5.1] because the ’034 patent “claims only multicore processors.” Prelim. Resp. 5 (citing Ex. 1001, 7:15–27). Petitioner responds in part as follows: To the extent PO is implicitly arguing that RS6000’s “four, eight, twelve, or sixteen 375 MHz 630FP 64-bit processors” do not teach the recited “cores,” Patent Owner’s argument excludes embodiments described in the ’034 patent’s specification. The ’034 patent describes “[p]rocessor cores [as] generally independent microprocessors.” Ex.1001, 5:14–15. Patent Owner’s attempt to exclude RS6000 from the scope of the claims 8 Pursuant to the Board’s Order on Related Matter Updates (Paper 14), the parties filed the September 26, 2025 Claim Construction Order entered in the co-pending District Court litigation in this proceeding. Ex. 1085. The District Court Claim Construction Order did not construe the claim phrase “hardware processor with a plurality of processing cores.” Id. patent where the processor has independent microprocessors. Patent Owner’s attempt to distinguish RS6000’s Symmetric MultiProcessor as a “configuration” (Paper 8, 24) also fails because a “Symmetric MultiProcessor configuration” is no different than the ’034 patent’s description of a configuration of independent microprocessors. Id. Paper 9, 30.9 It is apparent there is a dispute over the plain meaning of Limitations [1.4.1] and [1.5.1], “a second [third] hardware processor with a plurality of processing cores,” recited in the independent claims.10 The parties are ordered to propose and support a particularized plain meaning or other construction of Limitations [1.4.1], [1.5.1], and [30.1.2] in their briefs. The parties are ordered to analyze the relevant claim language and cite to the specification and prosecution history in support of their claim construction, where applicable, with particular attention to the description of a hardware processor with a plurality of processing cores in the ’034 patent. See, e.g., Ex. 1001, 5:11–37, 7:14–36, 9:50–10:3.” slip op. at 12

  • Obviousness (§103) › Analogous artAnalogous artInstituted

    “Motivation to Combine and Analogous Art The Petition offers several motivations to combine Menon, Trefethen, RS6000, and POEref in the manner claimed in the ’034 patent with a reasonable expectation of success, which we find sufficient on the present record. The Petition first asserts that Menon and Trefethen are analogous prior art because they pertain to the same “field of cluster computing” as the ’034 patent and “are reasonably pertinent to the problem of the ’034 patent, namely, executing a single program on multiple nodes.” Pet. 22 (citing Ex.1001, 1:14–15; Ex.1003, ¶¶ 65–69; Ex. 1005, 2; Ex. 1006, Abstract). The Petition points out that Menon expressly cites and builds on the MultiMATLAB system taught by Trefethen. Id. (citing Ex. 1003 ¶ 71; Ex. 1005, 1–2). The Petition also contends that: Accordingly, Menon and Trefethen together represent a combination of prior art elements according to known methods (executing MATLAB code on a multiprocessor system) to yield the predictable result discussed in both papers: the MultiMATLAB system executing MATLAB in parallel to perform mathematical calculations. Id. at 22–23 (citing Ex. 1003 ¶ 70; Ex.1005, Abstract; Ex. 1006, 2–7). The Petition further contends that a POSITA would have found it predictable to combine Trefethen with Menon with a reasonable expectation of success” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,570,034
• Apple Inc. v. Ferid AllaniInstitution denied
  PTAB · Nov 4, 2025 · IPR2025-00856 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–19 were obvious over the asserted prior-art combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). We determine Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of challenged claims 1–19 of the ’877 patent. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner asserts that a person of ordinary skill at the pertinent time “would be a person with a bachelor’s degree in computer science, computer engineering, or a closely related discipline and two years of relevant professional experience in software engineering or a similar field.” Prelim. Resp. 10. We adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Bederson. Ex. 1003 ¶¶ 32–33, 37–39. Although Patent Owner has proposed a slightly different statement for the level of ordinary skill in the art, Patent Owner does not explain why Petitioner’s proposal is incorrect. We find Petitioner’s proposed level presents a better statement of the level of ordinary skill in the art because it requires experience with web-based information systems and Patent Owner’s proposal does not. As noted above, the ’877 patent relates to a method for accessing information sources and services on the Web. Ex. 1001, 2:4–12. Further, Petitioner’s proposal appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We need not resolve the above-identified dispute, because a different aspect of “beforehand locally stored” is determinative. Read in context, “beforehand locally stored” in both limitations 1(a)(2) and 12(a) refer back to the “preliminary search” action recited in limitation 1(a)(1) and in limitation 12(a) itself, respectively. Thus, we construe “beforehand locally stored” to mean that the selection pages must already be stored within the communication device when the user begins the preliminary search, regardless of whether it was the user or an automated process that downloaded the selection pages to the communication device. This understanding stems from a plain reading of the claim language and does not leave room for reasonable doubt otherwise. Petitioner does not present any reason why the claims do not require the selection pages to have already been stored in the communication device when a user begins the preliminary search. C.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “of the language in these limitations is that the selection pages must be beforehand locally stored, where beforehand is assessed at the time of starting a preliminary search. Based on this construction, Petitioner has not sufficiently shown that Rossman discloses limitation 1(a)(2) and limitation 12(a), even for institution purposes. Petitioner identifies Rossmann’s cards as the claimed selection pages of claims 1 and 12. Pet. 18–19. Rossmann’s cards, however, are not beforehand locally stored on the communication device at the time a user begins a preliminary search for information. Rather, on the record before us, at the time of starting a search for information, the user must request a connection to a server device at a desired host site, which request results in the server device at the host site sending one or more decks each including a plurality of cards to the user’s mobile device. Ex. 1004, 6:26–29; 7:22–27; 7:56–66. Thus, Rossmann’s cards are not beforehand locally stored at the time the user commences a preliminary search. Petitioner’s reliance on Himmel and on King do not make up for this deficiency.” slip op. at 14

  Claim construction§ 103 obviousness
  Patents in suitUS 8,271,877
• Xencor, Inc. v. Merus N.V.Instituted
  PTAB · Sep 26, 2025 · IPR2025-00604 · APJ Ryan H Flax · IPR · Institution

  The Board instituted IPR on claims 1, 2, 7–24, 26–28, and 30–32 on all four grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions in view of the existing record, we conclude that Petitioner demonstrates a reasonable likelihood it would prevail in showing that at least one challenged claim of the ’286 patent is unpatentable under the presented grounds. See Pet. Therefore, we grant institution of inter partes review. Our reasoning is discussed below. A.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A POSA at the time of the alleged invention would have at least an advanced degree (e.g., a Master’s or Ph.D.) in biochemistry, process chemistry, protein chemistry, chemical engineering, molecular and structural biology, biochemical engineering, or similar disciplines; several years of post-graduate training or related experience (including industry experience) in one or more of these areas; and two or more years of experience in the production of bispecific antibodies. (EX1002, ¶¶16-17.) Pet. 15. Patent Owner states, “[f]or purposes of the Preliminary Response, Patent Owner applies Petitioner’s proposed definition of a POSA.” Prelim. Resp. 10. At this point, we accept and use Petitioner’s proposed, and unopposed, definition of the ordinarily skilled artisan. It appears that Petitioner’s proposed definition comports with the level of skill in the art reflected in the prior art of record and the ’286 patent, itself. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). C.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningNo construction neededDecided for petitioner

    “The ’286 patent uses the term “heavy chain” or “heavy chains” repeatedly; however, we find no express definition of the term. See generally Ex. 1001. Rather, the ’286 patent uses the term “heavy chain” in relation to antibody structure in a way that suggests the term is standard and well known in the art. See, e.g., id. at 3:19–59 (Background). The parties’ briefing on the technology reinforces this fact. See Pet. 5–14 (“The basic structure of natural IgG comprises four protein chains—two identical heavy chains (shown in red) and two identical light chains (shown in blue)—which are arranged in a Y-shaped configuration: . . . (EX1013, 112-13; EX1002, ¶¶23-30.)”); Prelim. Resp. 3–4 (“Natural or wild type Igs have a particular structure made of two identical light (L) chains and two identical heavy (H) chains. See EX2008 at ¶ 23. Each Ig heavy chain consists of three constant domains (CH1, CH2, and CH3) and one variable domain (VH), which is also isotypes, or a functional derivative and/or fragment of these. In a preferred embodiment, Ig-like molecules are produced that are antibodies of the IgG isotype because IgG antibodies e.g. have a longer half life as compared to antibodies of other isotypes. Ex. 1001, 11:9–21. As noted above (see supra Section I.C), IgG antibodies’ heavy chains have three constant domains, but IgE and IgM have four. Thus, Patent Owner’s argument that heavy chain means one variable and three constant domains, and two differently-binding Fab arms, ignores embodiments of the invention. consistent with the definition of heavy chain in the ’286 Patent. See EX2008 at ¶ 24; EX1001 at 11:58–66.”). This is also how the ’286 patent generally uses the term. See Ex. 1001, 11:58–12:1. But, the Specification does not limit its embodiments to only IgG antibodies because it also describes that the invention may be “IgG1, IgG2, IgG3, IgG4, IgA, IgE, and IgM” type antibodies, and fragments. Ex. 1001, 11:9–21; see also supra n.10 (quoting the ’286 patent’s definition of antibody). Other embodiments would not necessarily have the heavy chains as argued by Patent Owner. There is no evidence of record that the ’286 patent’s claims or the Specification generally use or limit the term “heavy chains” (or “heavy chain”) in any way deviating from its ordinary and customary meaning in the art. Therefore, at this stage of the proceeding, we decline to expressly interpret this claim language. 2. Summary on Claim Construction At this stage of the proceeding, we expressly construe no claim terms and give each claim term the ordinary and customary meaning it would have had to the person of ordinary skill in the art as of the invention date. See Nidec Motor Corp., 868 F.3d at 1017. If either party intends to further argue claim construction at trial, they should do so in a clearly designated section of their briefing so as to expressly identify such arguments. See, e.g., 37 C.F.R. § 42.104(b)(3) (content of petition); see also Board’s Consolidated Trial Practice Guide (CTPG) at 46, 48–45 (Nov. 2019).12 Claim construction arguments should not be relegated to patentability arguments on the facts.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “In brief summary, these limitations require one CH3 heavy chain to have a positive amino acid substituted in place of a neutral one, the other CH3 heavy chain to have a negative amino acid substituted in place of a neutral one, and that when the heavy chains are expressed by culturing the host cell these positive and negative amino acids interact and the antibody produced is a heterodimeric antibody. Petitioner asserts that Lazar expressly teaches engineering two CH3 domains so that, when expressed, they interact and form a heterodimeric CH3 interface by making neutral-to-positive and neutral-to-negative amino acid substitutions at known interacting residues on each CH3 domain, e.g., S364E (changing neutral serine to negative glutamic acid at residue 364) on one CH3 domain, and L368K (changing neutral leucine to positive lysine at residue 368) on the other CH3 domain; or T366D (swapping neutral threonine for negative aspartic acid at residue 366) on one CH3 domain and L351K (swapping neutral leucine for positive lysine at residue 351) on the other CH3 domain; that these residues were known in the art to be respective interfacing contact residues; that these modifications favor Fc heterodimerization; and that they result in a heterodimeric antibody (proof-of-concept shown by synthesizing and screening). Pet. 23–28 (citing Ex. 1001, 13:1–17, 17:67–18:3, 19:5–12; Ex. 1002 ¶¶ 111–119; Ex. 1004 ¶¶ 121, 183, 241 (Tables 1, 2); Ex. 1007, 8:9–10, 17:19–20 (Table 1); Ex. 1008, 244–36).” slip op. at 29

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,358,286

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.